Ex Parte Evans et al

Patent Trial and Appeal Board

Jul 25, 2018

11995552 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/995,552 09/03/2008 John C. Evans
19148 7590 07/25/2018
Shumaker, Loop & Kendrick, LLP
101 South Tryon Street
Suite 2200
Charlotte, NC 28280-0002
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2765/426US 8806
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
07/25/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. EV ANS, SHITIJ CHABBA, and
MARTIN O'HARA
Appeal2017-009309
Application 11/995,552
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John C. Evans et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1 and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appeal Brief, BSN Medical, Inc. is the real party in
interest. Appeal Br. 3.
Appeal2017-009309
Application 11/995,552
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A water-resistant orthopedic undercast sleeve, comprising:
(a) a tubular sheet material formed of extruded
filaments having water-resistant properties and a thickness
sufficient to provide both cushioning and moisture transport in
a single layer between a cast and a limb onto which the water-
resistant orthopedic undercast sleeve is applied, the tubular
sheet material comprising a three dimensional tubular knitted
fabric constructed from separate, spaced-apart top and bottom
layers wherein each of the layers is of knit construction and the
layers are joined together by interconnecting yams; and
(b) moisture egress channels formed in the top and
bottom layers by their knit construction and also formed
between the top and bottom layers for transporting moisture
away from the limb, longitudinally along the length of the
water-resistant orthopedic undercast sleeve, and out of a space
between the water-resistant orthopedic undercast sleeve and
cast, the tubular sheet material having sufficient resistance to
compression so as to maintain the moisture egress channels
subsequent to application of the cast over the tubular sheet
material;
wherein the tubular sheet material comprises a water-
resistant finish coating comprising a nano-coating;
wherein the tubular knitted fabric is formed in an
elongate roll of sufficient length to permit multiple lengths
suitable for application to the limb to be severed from the
elongate roll, as and when needed, and wherein a plurality of
indicia noting particular lengths corresponding to the limb are
located along the length of the tubular knitted fabric to indicate
where a cut may be made;
wherein the water-resistant orthopedic undercast sleeve is
knitted from a hydrophobic, low filament, multifilament yam
with a filament count of at least 10 and having a total denier
of between 500 - 1500;
2
Appeal2017-009309
Application 11/995,552
wherein the tubular knitted fabric is provided in pre-cut
lengths suitable for application to a limb of a predetermined
size and length; and
wherein the tubular knitted fabric comprises low
moisture regain hydrophobic fiber comprising polypropylene.
THE REJECTION2
I. Claims 1 and 17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Schultze (US 6,981,955 B2, iss. Jan. 3, 2006),
Yokoyama (US 2002/0115369 Al, pub. Aug. 22, 2002), Baychar
(US 2007/0281567 Al, pub. Dec. 6, 2007), Evans
(US 2004/0193083 Al, pub. Sept. 30, 2004), and Silvey
(US 4,829,993, iss. May 16, 1989).
DISCUSSION
Independent claims 1 and 1 7 require, in pertinent part, an undercast
sleeve "knitted from a hydrophobic, low filament, multifilament yam with a
filament count of at least 10 and having a total denier of between 5 00 -
15 00." Claims App. 1-3 ( emphasis added). The Examiner found that
Schultze discloses a knitted fabric undercast sleeve, but does not disclose,
inter alia, "the yam having a total denier of between 500- 1500." Final
Act. 3--4, 9-10. The Examiner also found that Schultze, Yokoyama,
Baychar, Evans, and Silvey do not disclose or teach the "yam having a total
denier of between 500- 1500." Id. at 8, 9, 12, 13, 14. However, the
2 The Examiner indicated that the amendment filed December 14, 2016,
overcame the rejection of claim 1 under 35 U.S.C. § 112, second paragraph,
set forth on page 2 of the Final Action. Advisory Act. (Feb. 3, 2017). Thus,
the rejection under 35 U.S.C. § 112, second paragraph, is deemed to have
been withdrawn, and is not before us for review.
3
Appeal2017-009309
Application 11/995,552
Examiner determined that it would have been obvious to provide the yam of
Schultze' s sleeve with "a total denier of between 500 - 1500, since it has
been held that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves only routine
skill in the art." Id. at 9, 14 (citing In re Aller, 220 F.2d 454, 456 (CCPA
1955)). According to the Examiner, "[o]ne having ordinary skill in the art at
the time of invention would find it obvious that the total denier of the yam
could be varied in order to achieve characteristics of the material that are
most desirable for a specific therapeutic application." Id. The Examiner
added, without citing any supporting evidence, that "[fJor instance,
increasing the total denier of the yam could prove more comfortable for one
user, while decreasing the total denier of the yam could prove more
comfortable for another user." Id. at 15.
Appellants argue that "the Examiner failed to show that the denier
count is a result-effective variable sufficient to sustain a rejection" under the
theory of routine optimization. Appeal Br. 8 ( citing In re Antonie, 559 F .2d
618, 620 (CCPA 1977)).
In response, the Examiner explains that "every yam has an inherent
denier" and "[t]his denier is a result-effective variable inasmuch as a higher
denier, which would result in a thicker fiber material, would result in a
material that is more cushioning than a material composed of fibers having a
reduced denier." Ans. 16-1 7.
Appellants argue that the Examiner's finding that denier count is a
result-effective variable amounts to "mere unsworn speculation" and that the
Examiner's explanation, in support of this finding, that a higher denier
results in a thicker fiber material "that is more cushioning than a material
4
Appeal2017-009309
Application 11/995,552
composed of fibers having a reduced denier" is speculation "without citation
to any reliable evidence." Reply Br. 3. Appellants cite an online technical
publication by Standard Fiber3 as stating that "[fJabrics with a high denier
count tend to be thick, sturdy, and durable" and that "[fJabrics with a low
denier count tend to be sheer, soft, and silky." Id. (emphasis added).
Appellants submit that, contrary to the Examiner's position that thicker fiber
results in more cushioning, the Standard Fiber publication cited by
Appellants indicates that higher denier would impart to the textile "qualities
which would not be conducive to the claimed undercast invention." Id.
Schultze expressly discloses using "microdenier yam" for the sleeve.
Schultze 2:58. Schultze explains that "[t]he term microdenier means having
a single filament denier of less than one" and teaches that "[t]he use of a
microdenier yam provides superior cushioning and comfort as compared to
yams of the prior art." Id. 2:58-62; see also id. 5: 18-19 (teaching that "the
use of a microdenier yam may contribute to the cushioning effect").
Schultze also discloses specific examples of sleeves comprising yams
having total denier values varying from 20 to 70. Id. 7:54--8:5.
As explained in In re Applied Materials, Inc., 692 F.3d 1289, 1295
(Fed. Cir. 2012):
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation." Aller, 220 F.2d at
456. This rule is limited to cases in which the optimized
variable is a "result-effective variable." In re Antonie, 559 F.2d
618, 620 (CCPA 1977); see Boesch, 617 F.2d [272,] 276
[ ( CCP A 19 80)] (" [D] iscovery of an optimum value of a result
effective variable ... is ordinarily within the skill of the art.").
3 Available at http://www. standardfiber. com/materials/bedding/basics/ about-
denier/.
5
Appeal2017-009309
Application 11/995,552
[Where the "general conditions" of the claim are disclosed,
such as where the prior art disclosed values overlapping the
claimed range(s), t]he question is whether the [parameter for
which a range or value is claimed was] known to be [a] result-
effective variable[].
Thus, even assuming the general conditions of the claim are disclosed
in Schultze, 4 the Examiner's determination that the total denier range recited
in claims 1 and 17 would have been obvious as a matter of routine
optimization is proper only if the rejection also establishes that denier was
known to be a result-effective variable at the time of Appellants' invention.
The Examiner does not point to any evidence in the record to support the
Examiner's finding that denier was an art-recognized result-effective
variable. Moreover, the Examiner's explanation attempting to support this
finding appears contrary to both Schultze' s discussion of the use of
microdenier yam providing superior cushioning and the Standard Fiber
publication's statement that fabrics with a high denier count tend to be
sturdy, while fabrics with a low denier count tend to be soft. Thus,
Appellants persuade us that the Examiner failed to make a sufficient
showing that denier count is a result-effective variable to support a
sustainable obviousness rejection under the theory of routine optimization.
Accordingly, we do not sustain the rejection of claims 1 and 17 under
35 U.S.C. § 103(a).
4 Notably, the yam denier values disclosed by Schultze (i.e., values ranging
from 20 to 70 denier) do not overlap the claimed range of 500 - 1500.
6
Appeal2017-009309
Application 11/995,552
DECISION
The Examiner's decision rejecting claims 1 and 17 is reversed.
REVERSED
7